Journal of Intellectual Property Rights

Vol 10, November 2005, pp 480-490

Passing off and the Law on Trade Dress Protection: Reflections on

Colgate v Anchor
Anu Tiwari
The West Bengal National University of Juridical Sciences, N U J S Bhawan, 12 L B Block, Sector-III, Salt Lake, Kolkata 700 098
Received 20 April 2005, revised 16 August 2005

The trade dress or get-up of goods has long been recognized as protected from any form of unauthorised
appropriation traditionally under the law of passing off and more recently under the tort of unfair trading. The paper
principally relies on case analysis in order to ascertain the approach of the courts with regard to this species of protection.
This has been essential because statutory law on trademark lacks express provisions, which could comprehensively bring
within its sweep trade dress protection of articles of commerce. This paper assesses impact of a recent judgment of Delhi
High Court in Colgate v Anchor, on the course law takes in future on this subject. This ruling has considerably widened the
net of protection available to the external appearance and configuration of goodstogether constituting the trade dress of
goods. An attempt has been made to critically analyse the Colgate ruling and assess its merits on the touchstone of the
principles extracted from the existing corpus of case laws on trade dress protection, in the process arguing against a liberal
protectionist regime.

Keywords: Passing off, trade dress

An action for passing off, as the phrase passing off
itself suggests, is in the nature of a restraintment to
the defendant from passing off its goods or services to
the public as that of the plaintiff's1. Such passing off
claims can take many forms such as for the
trademark, the shape and configuration of the goods,
or the get-up or outward appearance of the articles all
of which comprise the trade dress of the product. In a
recent judgment of significant importance, the Delhi
High Court in Colgate v Anchor2 delved at length into
the law on trade dress protection. The Colgate ruling,
though being a High Court decision, has been studied
in detail for more than one reason. A thorough review
of the ruling was called for owing to the
unprecedented nature of the findings and the potential
effects it could have on the development of passing
off jurisprudence in India.
The paper further provides a brief background on
the law of passing off and its recent evolution into the
tort of unfair trading. Then it ventures into the realm
of trade dress protection and discusses its scope and
character. The concluding part studies the Colgate
ruling and attempts to gauge its soundness on the
touchstone of the established notions of trade dress
protection.
___________
Email: anuatiwari@gmail.com
Passing off: A Case of Reaping without Sowing
A man who engages in commercial or trading
activity may acquire a valuable reputation in respect
of the goods in which he deals, or of the services that
he carries out, or of his business as an entity. The law
regards such a reputation, or the goodwill so
generated, as an incorporeal piece of property, the
integrity of which the owner is entitled to protect3. In
the event, another trader seeks to take unauthorized
advantage of that goodwill so as to cash in on it to the
disadvantage of the first, and in the process causes
business loss or a likelihood of the same to the latter,
the aggrieved trader can take action under the law of
passing off. The basic premise on which this common
law remedy is founded is that no man, either
knowingly or unknowingly4, is entitled to represent
his goods or business as being the goods or business
of another; whether such representation is made by
the use of any mark, name, sign, symbol, device or by
any other means5.
The preservation of business goodwill is the prime
concern of passing off with the ancillary effect of
protecting the consuming public from deception6.
What has to be established is the likelihood of
confusion in the minds of the public, i.e., both actual
and potential customers and users, that the goods or
services offered by the defendant are the goods or the
services of the plaintiff. In assessing the likelihood of
 TIWARI: PASSING OFF AND THE LAW ON `TRADE DRESS PROTECTION
such confusion, the Courts must allow for the
imperfect recollection of a person of ordinary
memory7.
Casebooks abound with illustrations on passing off.
An action similar to the present day remedy of
passing off was first recognized in the case of J G v
Samford dating back to the year 15848. On that
occasion, a case was brought by a clothier who had
gained high reputation for his cloth that was identified
by him in the market by setting his own mark to the
cloth. Later on when another clothier applied the same
markings to his own articles, an action was sought to
be initiated for the ensuing deception in trade9. Since
then, the subject matter covered by this branch of law,
often referred to as a form of wrongful appropriation
of the plaintiffs personality10 and also finding
recognition under the new Trade Mark Act of 199911
has received considerable reflection by the Courts at
various levels in diverse jurisdictions.
The most classic formulation on passing off came
in Perry v Truefitt12 by Lord Langdale MR. In this
case; he instructed, A man is not to sell his own
goods under the pretence that they are the goods of
another trader. The same principle has come to be
acknowledged in Indian jurisprudence as well. In
Ellora Industries v Banarasi Dass,13 the Delhi High
Court, when called upon to define the parameters of
this remedy, opined thus:
The gist of the conception of passing
off is that the goods are in effect telling a
falsehood about themselves, are saying
something about themselves which is
calculated to mislead14
A passing off claim when contrasted with an action
for infringement reveals that, though common in
origin, they now occupy distinct realms of operation.
In a passing off action, the plaintiffs rights are
independent of any statutory rights and additions in
get-up or trade dress might be relevant to enable the
defendants to escape liability15. Whereas in
infringement cases, which are based on violation of
statutorily conferred proprietary rights, such facts
hardly assume any relevance16. Another determining
factor being the use of the mark itself. In an action for
infringement, the use of trademark of the plaintiff in
relation to goods is a sine qua non for the action. In
contradistinction, in a passing off action, it is deceit as
practiced on the public and not the use of the
trademark that is to be shown. This connotes that even
if a claimant fails to make out a case of infringement
481
of a trademark he may still succeed on a plea of
passing off17.
The Classical Trinity Essentials for an Action
In passing off, the plaintiff is required to meet
certain well-entrenched qualifications in order to
succeed. These tests, evolved as a result of successive
Court dicta, take various forms ranging from the most
basic ones calling for meeting of only the bare
essentials to the more elaborate mandating the proof
of supplementary conditions. The three essential
constituents, viz., goodwill, misrepresentation and
damage are the primary elements, a successful
claimant must prove, and are collectively referred to
as the classical trinity of passing off18. In contrast,
the essentials of passing off in their extended form
can be laid down as, firstly, being in the nature of a
misrepresentation; secondly, made by a trader in the
course of trade; thirdly, to prospective or ultimate
consumers of goods or services supplied by him;
fourthly, which is calculated to injure the business or
goodwill of another as a foreseeable consequence of
the actions; and lastly, which causes actual damage to
a business or goodwill of the trader by whom the
action is brought19 The essentials required for
instituting a passing off action have been expounded
time and again by Courts and no exhaustive list can
be proposed at this stage20.
The Modern Day Formulation of Passing off Claims
In its early nineteenth century formulation, the law
of passing off was restricted to protecting the name or
trademark of a product or business alone.
Consequently, in cases where the look of the business
premises were passed off, or there was a
misrepresentation as to business or if the appearance
of the product carton bore deceptive similarity no
action could lie in common law. Over the years, the
law on this point has witnessed a liberal swing. With
everyday improvements in the technology of the
trade, new varieties of passing off have sprung up.
The horizon of this common law remedy, evolved
predominantly from the torts of deceit, injurious
falsehood and misrepresentation21 are getting
increasingly expanded with modern inventions such
as television, radio, newspaper advertisements,
Internet and other means of trade canvassing. The
present shape of the remedy makes it amply wide to
encompass, in addition to the trademark of a product,
a wide gamut of trade related activities and
descriptive material.
482 J INTELLEC PROP RIGHTS, NOVEMBER 2005
Another significant development has been that the
traditional doctrine of passing off as a tool for
protection of business interests in goodwill,
especially, in trade dress is being increasingly applied
in the form of the tort of unfair trading in the western
legal systems22. Unfair trade practices and consumer
protection law in the west illegalizes unfair methods
of competition and unfair or deceptive acts or
practices in the conduct of any trade or commerce
including passing off of trade dress and get up of
goods23. The Indian Courts, nevertheless, have shown
the propensity to address the issues of trade dress
protection within the broad parameters of the law on
passing off rather than find the source for the same in
competition law24. As a result, the study is confined to
passing off aspects of trade dress protection
independent of the treatment of the subject matter in
the law of unfair competition. The next part deals
with trade dress and get-up in particular as protected
under the law of passing off.
Protection of Trade Dress under the Law of
Passing offForbidding profit without labour
What is Trade Dress Protection?
As highlighted earlier, in addition to traditional
view of identifying goods with their trademark, a
sellers goods may also be recognized as his own by
their general appearance, or their trade dress and
get-up. In the earlier days, the packaging of goods
used to be of a rudimentary style primarily owing to
slow competition and the limitations on the
availability of packaging material. Wrappers were
rarely printed and the ones that were printed were
confined to a limited range of colours largely due to
unavailability of stable dyes25. With the growth of
trade and commerce, production increased manifold
and consumers came to be confronted with myriad
choices with different brands being available for the
same goods. Gradually, it became much easier for the
manufacturers to create a get-up well adapted to
differentiate their goods from those of their rivals in
the market. With this a reliance on the external
appearance of the goods assumed importance and at
times even overshadowed the effect of identity of
names of products. Thus arose a need for the law to
safeguard the traders from an encroachment upon
their reputation amassed over time by applying a
distinctive get-up on their goods.
In present day use the expression trade dress of a
product is taken to denote the whole visible external
appearance of goods in the form in which they are
likely to be seen by the public before purchase26.
This becomes clear from the views of Lord Justice
Harman in Hoffman-la Roche & Co v DDSA
Pharmaceuticals Ltd 27 where, in relation to the get-
up of certain medicine pills, he proceeded to
emphasise the point in favour of trade dress protection
by observing that:
goods of a particular get-up just as
much proclaim their origin as if they had a
particular name attached to them, and it is
well known that when goods are sold with a
particular get-up for long enough to be
recognized by the public as goods of a
particular manufacturer, it does not matter
whether you know who the manufacturer
is...
What is Protected as Trade Dress?
The law on protection of trade dress which,
evolved as a protection against counterfeiting under
the old English law28, covers several features of the
product and the garb in which it is marketed to the
public. The expression trade dress, in
contradistinction to related terms such as get up of
goods, is a wider term encompassing the get up itself,
i.e., the product packaging in which the product is
marketed, and the product configuration, i.e., the
actual product design29. In contrast to product
packaging, product configuration trade dress is the
three dimensional aspect of the product being the
design of the entire product, including its
configuration or shape30. This includes protection to
paperback books and their covers31 and style and look
of rock groups32.
Trade dress, essentially denoting the total image
of the business33, includes within its protective sweep
materials such as the size, colour pattern34, shape and
external configuration of the goods35 or their package
or container36, wrappers and labels37, and the dress in
which goods are offered to the consuming public
including the texture, design or graphics38, the style of
writing39, directions printed on the label40, get-up of
shop or business premises41 and articles employed in
business42, business literature43 or any other additions
to the articles in the conduct of the claimants
business. This shows the wide field of protection
available under a passing off action to the trade dress,
which very much extends beyond the mere physical
attributes of the product or its get up to cover the
entire range of business activities of a trader over
which he enjoys goodwill.
 TIWARI: PASSING OFF AND THE LAW ON `TRADE DRESS PROTECTION
The Elements Required to Acquire Trade Dress Protection
In an action for imitation of product or business
trade dress, the claimant is called upon to prove at the
threshold that the get-up over which he claims
exclusivity is, such as to convey to the minds of the
consuming public, an impression that they indicate
the goods of the claimant alone without causing the
consumers to draw an incorrect trade connection44.
This entails that the trade dress over which protection
is claimed must be either inherently distinctive or
acquired distinctive status through secondary meaning
and that a likelihood of confusion exists as to the
source of competing products45. Consequently, to
command protection under law, the trade dress has to
serve as the badge of a particular trader so as to
indicate trade source of particular goods.
Making a Case of Trade Dress Protection De Hors Statute
Law
It is not denied that the nature of protection
claimed by a producer over his trade dress under
passing off law could be suitably conferred under the
relevant provisions of trademark law or for that matter
the law on designs and copyright. The ornamental
impressions on the container, label or the surface
pattern may find independent protection as a piece of
artistic work used in the course of merchandise under
the copyright law46. The same may apply in case
shape, configuration, pattern, ornament or
composition of lines or colours applied to any article
of commerce is registered under the Designs Act,
200047. Such a species of protection could, however,
be invoked only in cases where prior registration
could be proved. In contrast, the trade dress protection
under the law of passing off acts as a source of
safeguard to the business rights the moment goodwill
has been created or attempted to be unfairly taken
advantage of notwithstanding the requirement of
either registration, like in the case of trademark and
design, or use. Similarly, copyright over only certain
aspects of the trade dress may be claimed such as the
literary and artistic facets of the get up of the goods,
which too fails to act as an exhaustive source for trade
dress protection.
The scope of the statute law on intellectual
property in India needs to be understood in the
perspective that the present day law on trademark and
design protection as avenues for defending trade dress
rights has been an upshot of the early recognition of
the same in the law of passing off and can be an
483
independent source of scholarly research. This,
however, has not been the endeavour of the present
paper. The author has approached the question of
trade dress protection outside the statutory law on
trade name or design protection in India.
Nevertheless, it is imperative to provide a defence of
the treatment of the subject of trade dress protection
exclusively under the law of passing off. This
approach can be justified by citing the nature of
intellectual property rights envisioned under the
codified law on business and trade name protection
under our legal regime. Firstly, it must be realized that
unlike trademark law, trade dress law is less explicitly
set forth in statute law in India. The text of Trade
Marks Act 1999 provides little guidance as to the
status of trade dress protection in India let alone
outlining the circumstances under which a trade dress
may be protected. Nonetheless, the recent
developments in trademark law need to be assessed to
make an informed criticism of the prevailing law on
this point. In the Trade and Merchandise Marks Act,
1958, the concept of trademark [Section 2(1) (v)] was
different, but following the guidelines given by
various courts of law and also by reason of
representation made from various quarters, the said
concept has been changed as it is evident from
Section 2(1)(zb) of the Trade Marks Act, 199948. The
present law on trademark protection can be credited to
have implicitly acknowledged the need of trade dress
protection, however, the same can be said to be only a
modest attempt by the law givers to stretch the letter
of the law to bring within its expanse Trade-Related
Aspects of Intellectual Property Rights (TRIPS)
elements such as trade dress.
Secondly, trade dress protection is broader in scope
than trademark protection. One of them being that the
breadth of trade dress protection is generally
perceived to be broader than the conventional
protection afforded to trademarks and business names
under the trademark and design law. The reason for
the above is rooted in the fact that it not only protects
aspects of packaging and product design that cannot
be registered for trademark protection49, but also since
evaluation of trade dress infringement claim requires
the Court to focus on the plaintiffs entire selling
image, rather than the narrower single facet of
trademark alone50. These elements encompass the
manufacturer's total selling image, unlike trademarks
that merely identify and distinguish the manufacturers
from the competitors51.
484 J INTELLEC PROP RIGHTS, NOVEMBER 2005
Consequently, it can be safely argued that the
emphasis in the Trade Marks Act being on the
protection of trademark in its diverse forms, cases of
trade dress not strictly falling within the statutory
definition of trademark under Section 2(1)(zb) of the
Trade Marks Act such as business appearance and
essentially any facet of business or product that
enjoys goodwill independent of the brand value
enjoyed by the trademark cannot always be included
within the protective sweep of the Trade Marks Act.
This, thus, calls for separate protection to the trade
dress of goods or business. As a result, an assumption
of trade dress protection envisaged within the
precincts of the Trademarks or Design Act calls for
greater academic investigation.
In the ultimate analysis, under the present law, the
trade dress of the manufacturer in which he presents
his articles to the consuming masses receives
sufficient protection against any unauthorized
appropriation. It strikes a fine balance by protecting
distinctive trade dress borne by the goods on the one
side and on the other, by sufficiently paying heed to
the requirements of market competition.
Colgate v Anchor
In Colgate Palmolive & Co v Anchor Health and
Beauty Care Pvt Ltd52, the Delhi High Court, raising
the bar of protection available to the trade dress of
goods, held that similarity of trade dress was an
attribute of passing off, and was actionable per se.
This section evaluates the Colgate dictum from close
quarters to reveal its profound impact on the law of
passing off and highlight the flaw in the reasoning
employed by the Court.
The Facts
The plaintiffs were selling tooth powder under the
trademark Colgate in cans bearing distinctive get-up
and colour scheme53. The colour configuration was
purportedly applied by the defendants on their cans
for a similar range of products. Colgate alleged that
Anchor had adopted similar trade dress in terms of
layout, get-up and colour combination with the
obvious intention to encash upon the plaintiffs
reputation and goodwill54. In effect, the plaintiffs
averment was that the red and white trade dress had
acquired the meaning as a trademark and they claimed
to earn exclusive ownership over the same55.
Anchor argued that the essential feature of the label
mark was the word mark and not the colour
combination or the overall get-up and since the two
trademarks in question, viz., Colgate and Anchor, successful passing off action. The decision can be
were entirely different, Colgate could not seek
protection under the garb of colour combination of the
label56 Taking cognizance of the similarity in the
colours of the rival containers, the Court ruled this to
be an instance of passing off based on the overall
similarity of trade dress of the two products.
The Law
The Colgate ruling was not the first occasion when
the Court ruled that similarity of get-up, colour
combination and packaging amounted to passing off.
The matter assumes significance when one considers
that despite there not being an iota of similarity in the
rival trademarks (i.e., Colgate and Anchor), the
plaintiffs succeeded based on their argument on
similarity of look and appearance of the impugned
products alone57. The Court observed that as literary
levels were abysmally low in our country, it would
not be possible for an ordinary man to distinguish the
names Anchor and Colgate58. Acknowledging
trade dress protection in law, the Court went on to
conclude:
There is wide protection against
imitation or deceptive similarities of trade
dress as trade dress is the soul for
identification of the goods as to its source
and design and as such is liable to cause
confusion in the minds of unwary
customers, particularly, those who have
been using the product for a period59.
The Court granting an injunction in favour of
Colgate went on to express that the test in such cases
was whether there was a likelihood of confusion or
deception in the minds of unwary customers,
irrespective of dissimilarities in the trade name60.
The Colgate Ruling in Appraisal
With the decision in Colgate case, the continuing
struggle for supremacy between protectionism on the
one hand and permitting competition on the other just
got tilted in favour of the former at the expense of the
latter. The decision, for all intents and purposes,
deviates from the settled principles of passing off with
a subjective interpretation of the various precedents
on which the court relied upon. Cases preceding
Colgate where imitation of trade dress was ruled,
invariably, sought to club trademark similarity with a
close resemblance in the get-up of the rival products
and the cumulative effect of both resulted in a
 TIWARI: PASSING OFF AND THE LAW ON `TRADE DRESS PROTECTION
further looked through the prism of other preceding
judicial observations on similar matter.
Twin Considerations of Trade Dress and Trademark Similarity
The common law on trade dress protection gives
the impression that similarity in trade dress, including
the colour of the label, or its decoration and the
manner of arrangement of various features on the
label, per se may not be capable of constituting the
basis of an actionable claim for passing off. It is
pertinent to note that the long line of cases where the
defendants have been injuncted from passing off the
get-up of their goods, an element of visual, structural
or phonetic similarity in the trademarks can be
witnessed, in the absence of which the action has
failed61. Even the cases finding reference in the
Colgate decision and seemingly forming the basis for
the ruling reinforce the above observation. This shows
that the cases relied on in Colgate differ with the
dictum laid down therein in so far as there existed
apparent factual incongruity between them.
For instance, in Camlin Pvt Ltd v National Pencil
Industries62 which was relied on by the plaintiff in
Colgate, pencils Camlin Flora of the claimant had a
distinctive floral design and colour scheme. Here an
action against the proprietors of Tiger Flore with
identical artwork on their pencils and cartons had met
with success and the defendants products were held
to be deceptively similar to those of the claimant. This
case was centered on the factor that there existed a
stark visual and phonetic similarity in the respective
trademarks of the parties involved.
The above proposition is further entrenched when
one considers the decision of the Calcutta High Court
in a similar get-up case in Kuber Khaini v Prabholal
Ramratan Dass63. There the defendant was
distributing khaini and guthkas in pouches and sachets
having design, get-up, colour scheme and dimension
deceptively similar to the petitioners pouch design.
The rival trademark as applied on the products in this
case were Kuber and Chakor, which were both
quite symmetrically placed on the pouches. Denying
an injunction, the Court ruled that if a purchaser
wants to purchase his goods, he must know the goods
he is purchasing and that the different name is a
piece of evidence that the buyer will go by the name
as well and therefore, there is no question of being
deceived64. This demonstrates that the cases relied on
in Colgate themselves do not support the dictum laid
down in Colgate in so far as there existed apparent
factual incongruity between the former and the latter.
485
In view of these cases, it seems that in cases revolving
around trade dress similarity an implicit consideration
of trademark resemblance buttressed the cause of the
plaintiff. The lack of such a consideration in the
Colgate case calls for further scrutiny. For the sake of
brevity, the observations have been grouped under
four distinct heads.
No Cause for Confusion if Marks Prominently Displayed
In cases where trademarks have been dissimilar,
the matter has largely hinged on how prominently the
rival marks have been displayed on the products.
Trade dress has assumed a decisive factor only in
those cases where the trade origin of the defendant,
i.e. the trademark of concerned goods, has not been
put on view in a reasonably conspicuous manner, and
similarly the corollary also holds true65. To cite an
illustration, in King & Co Ltd v Gillard66, the
claimant was trading in preparations for soup in
packets of certain size, shape and printing put in steel
boxes of a certain kind, with the letters Edwards
displayed thereon. The defendant started selling
similar products in a series of similar packets under
the name of Gillards appearing at the place where
Edwards appeared on the plaintiffs goods.
Rejecting an action for passing off, Romer, L J came
to the conclusion that as the words Edwards and
Gillards were displayed prominently on the
respective cartons, any scope for confusion was
obviated despite the unmistakable similarity in the
appearance of packets and boxes.
Thus the prominence with which Anchor was
exhibited as a label mark on the product should have
been a strong consideration before the court in
Colgate in judging the overall deceptiveness of the
trade dress of the rival products.
Product Design and not Product Packaging
Another prong of attack on the judgment can be on
the ground that the competitive interest in duplicating
product designs is stronger than the interest in
imitating packaging alone and thus must weigh in
before any finding on passing off is arrived at.
Packaging only acts as an encasement for the actual
product prior to sale and is normally the portion of a
product that will probably be discarded upon
purchase. The same applies to the product carton,
which was granted trade dress protection by the court
in Colgate. Thus, in cases of trade dress, a distinction
needs to be carved out between packaging and design
with the latter forming protectable subject mater in a
486 J INTELLEC PROP RIGHTS, NOVEMBER 2005
majority of the cases and not the former67. The red
and white colour pattern of the external carton of the
product of Anchor was a case of packaging protection
alone, meant only as dressing for the actual product
the toothpowder, which has traditionally enjoyed a
much diluted degree of protection when compared to
product design.
Further, as was the opinion of the US Supreme
Court in Qualitex Co v Jacobson Products68, colours,
while able to serve as trademarks, could never be
inherently distinctive. In this case green and gold
colour of a brand of dry cleaning pads could be
protected as a trademark, but only after showing of
secondary meaning. As in Colgate, the question of
secondary meaning over the product packaging in
terms of colour was neither asked for by the court nor
established by the plaintiff the decision doctrinally
falls short of setting forth constructive precedent in
trade dress law. Thus, the Court should have provided
more guidance on how to establish trade dress passing
off based on product packaging or product design
alone as this has been a novel contribution to the
passing off jurisprudence by the court in Colgate.
Dilution of Literacy as a Consideration
Furthermore, in the present times, a justification for
a stricter regime for trade dress protection based on
the perceived illiteracy of the consuming masses
seems untenable. A case in support of this assertion is
that of Schweppes Ltd v Gibbens69. Here the colour of
bottles and the neck label being identical, the plaintiff
could not establish passing off due to the difference in
Schweppes soda water and Gibbens soda water
as rival marks. In arriving at the judgment the
observations by Lord Halsbury in Schweppes have
reverberated through generations of getup cases70. He
stated thus:
if a person is so careless that he does
not look, and does nottreat the label
fairly, but takes the bottle without sufficient
consideration and without reading what is
written very plainly indeed upon the face of
the label on which the trader has placed his
own name, then you certainly cannot say
that he is deceivedin fact, he does not
care which it is...
These observations were upheld in Payton & Co v
Snelling Lampard & Co71 where Lord Romer L J very
aptly pointed out that it was a misconception to refer
to the confusion that can be created upon an ignorant
customer. The kind of customer that the Court ought
to think of in these cases was the customer who
knows the distinguishing characteristics of the
claimants goods. If he does not know that, he is not
a customer whose views can properly be regarded by
the Court72
This strand of judicial reasoning has been
borrowed in Indian jurisprudence and applied by
judges in cases of get-up imitation. In J & P Coats
Ltd v Chadha & Co (India), where colour of rival
boxes of thread was similar, the Court held that even
the illiterate users may well be expected to distinguish
between the opposite marks Dog and Anchor. In a
similar observation in the earlier mentioned Kuber
Khaini case, the Court put that a buyer must know
his product for which he has a choice. He certainly
has a right to find out the same whether he is literate
or illiterate73. This gives rise to an argument that if in
the trade of loose tobacco, with a largely illiterate
consumer base incapable of distinguishing between
the rival brand names, a likelihood of confusion
cannot be said to exist then how prudent will it be to
aver that in the business of selling tooth powder, with
a considerably literate purchaser segment, a
resemblance of trade dress alone would lead to
deception among the public.
In the final analysis, if the consumer is literate
enough to gauge the importance of oral hygiene then
is it not absurd to assume that the same consumer
would turn a blind eye to the trademarks Anchor and
Colgate as a badge of origin placed on the respective
product cartons? Cases such as Colgate v Anchor
have long been the basis for jurists to argue that the
law has gone too far in protecting products by passing
off actions74. In contrast, the English Courts have
shown an unmistakable tendency of rejecting out of
hand, allegations of passing off based on replication
of the product design alone. The Indian jurisprudence
on the point is in need of a review so as to admit only
the genuine cases of passing off taking an objective
account of the supposed vulnerability of the
customers to imitations of trade dress. The element of
brand loyalty will not let the consumers eschew the
all-important trademark on the goods that he intends
to buy. In view of all this, it would be a foolhardy
assumption to denigrate the intellect of the
consumers, notwithstanding how average his intellect
or imperfect his recollection.
Conclusion
With the broadening of unregistered trade dress
protection, the Colgate decision may have the effect
 TIWARI: PASSING OFF AND THE LAW ON `TRADE DRESS PROTECTION
of redrafting the passing off jurisprudence in India,
though not without glaring inconsistencies. An
imitation of the trade dress no doubt amounts to
passing off and is as culpable as enjoying the fruits of
someone elses labour, and quite justifiablyreaping
without sowing. However, what needs to be taken
note of is that in trademark cases, the tension is
between protectionism on the one hand and allowing
competition on the other. Decisions such as Colgate v
Anchor have not helped the matter with the opinion
demonstrating several doctrinal flaws. Even in
American jurisprudence, the shift has been towards
protection of competition with the imposition of strict
qualifications for the establishment of trade dress
passing off75. In Colgate, the Court deviated from the
legal rule thatin spite of close resemblance in
packaging and cartons, if the name of the products or
its trade source is amply indicated prominently, prima
facie it evidences that there was no intention on the
part of the plaintiff to play a fraud by
misrepresentation. This will have the undeniable
effect of further stretching the protective thread
surrounding the domain of trademark protection and
go to stifle free competition.
The theory of passing off has been borrowed from
the corpus of common law, which being in the nature
of judge made law, ambiguities and inconsistencies in
get-up and trade dress cases are inevitable and hard to
reconcile. In the present times, when the visual image
in which a product is clothed has become more
appealing, leaving a lasting impression on the
consumers mind in contrast to a mere phonetic
impression the trademark creates, it will not be
unwise to ponder over conferring a more elaborate
statutory backing to the law on trade dress protection.
This will additionally have the effect of introducing
an element of uniformity in judicial opinion on the
subject, which hitherto has revealed a tortuous
thought process on the part of the judiciary. Another
disturbing development in trademark law has been the
overemphasis on the doctrine of average man of
imperfect recollection. This doctrine as laid down
and applied in a score of judgments as a test to assess
the likelihood of confusion has been pressed far too
often. This has resulted in a substantial dilution of the
requirements for setting up a claim of passing off76.
In conclusion the observations of Lord Searman
may be recollected to understand the present
dichotomy. He once remarked: but competition
must remain free, and competition is safeguarded by
487
the necessity of the plaintiff to prove that he has built
an intangible property right in the advertised
description of his product, or, in other words, that he
has succeeded by such methods in giving his product
a distinctive character77. This distinctive character, as
required by Lord Sherman, is suitably imparted to any
article of commerce till it bears a distinctive name or
mark.
The paper does not claim to have resolved all the
interpretative questions qua the degree of protection
accorded to trade dress of a product, but simply
endeavours to have provided a useful starting point
for future discussion and analysis of one of the
important concepts in the fold of passing off law.
Acknowledgements
The author is grateful to Mr Sunil B Krishna of
Krishna & Saurashtri, Trademark and Patent
Attorneys, Mumbai, for his insightful comments on
the successive drafts to this paper and the academic
support extended. A note of gratitude is also extended
to Mr Anirban Majumdar, Lecturer in Law, NUJS and
my colleagues Mr Navin Shah and Shruti S Rajan for
their assistance in the preparation of the article and
the helpful comments of two referees. However, all
errors and omissions remain the responsibility of the
author.
References
1 Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd, AIR 2004
SC 3540
2 2003 (27) PTC 478 (Del)
3 HP Bulmer Ltd v J Bollinger SA [1978] RPC 79, 93 per
Buckley, C J
4 Wadlow Christopher, The Law of PassingOff (Sweet &
Maxwell, London) 3rd ed., 2004, 1.10 (The author argues
that factors such as negligence and mens rea, have no
bearing whatsoever in an action for passing off)
5 Reddaway v Banham (1982) 13 RPC 503; Farina v
Silverlock (1856) 6 De M & G 214; (1896) 13 RPC 218
(HL); Nestle Products v Milkmaid, AIR 1974 Del 40;
National Sewing v James Chadwick, AIR 1948 Mad 481;
Singer v Loog, (1881) 18 Ch D 395
6 David Bainbridge, Intellectual Property, (Pearson Education
Publication, New York) 5th ed. 2002, 641
7 Aristoc v Rysta, 1945 AC 68 cited in Satyam Infoway Ltd v
Sifynet Solutions Pvt Ltd, AIR 2004 SC 3540, 3545 per
Ruma Pal J, on the application of this theory of man of
average intelligence with imperfect recollection, Cadila
Healthcare Ltd v Cadila Pharmaceuticals Ltd, 2001 PTC
300 (SC); Corn Products v Shangrila, AIR 1960 SC 142
8 Cited as a precedent in Southern v How (1618) Cro Jac 468;
Bentley & Sherman, Intellectual Property Law (Oxford
University Press, London) 1st ed, 2001, 671. On the origins
and early developments of the law of passing off, Wadlow
Christopher, supra note 5, 1.27
488 J INTELLEC PROP RIGHTS, NOVEMBER 2005
9 Dean v Steel (1926) 82 ER 339 per Dodderidge J
10 Narayanan P, Law of Trade Marks and Passing off (Eastern
Law House, New Delhi) 5th ed, 2000, 685
11 Trademark Act, Sections 27(2), 134(1)(c), 135 (1999)
12 (1843) 6 Beav 66; Leather Cloth Co v American Cloth Co
(1865) 11 H.L. Cas. 538
13 (1981) PTC 46 per Anand Behari Rohatgi J
14 Id 257
15 Saville Perfumery v June Perfect, (1941) 58 RPC 147
16 S M Dyechem Ltd v Cadbury (India) Ltd, 2000 PTC 397
(SC). The distinction between passing off and an
infringement action has been clarified in the following cases:
Durga Dutt Sharma v Navaratna Pharmaceuticals
Laboratories Ltd, AIR 1965 SC 980; Ruston & Hornsby Ltd
v Zamindara Engineering Co, AIR 1970 SC 1649; Parle
Products (P) Ltd v J P & Co, AIR 1972 SC 1359; Wander
Ltd v Antox India Pvt Ltd, 1990 Supp SCC 727; Borosil
Glass Works v O P Batra, 1998 (18) PTC 101
17 Kerlys Law of Trademarks and Trade Names, edited by
Kitchin (London) 13th ed, 2001, 14.34. The principles for
consideration in an action for infringement or passing off
were detailed in Cluett Peabody & Co v Arrow Apparels,
1998 (18) PTC 156, 175 per Kapadia J
18 Wadlow Christopher, Supra note 5, at 1.8; Narayanan P,
supra note 11, at 685; Smithkline Beecham v Hindustan
Lever Ltd, 1999 PTC 775 (Del) per Sharma J (To prove a
prima facie cause of action for passing off the following
conditions have to be fulfilled: (a) Goodwill to be pleaded
and proved prima facie; (b) Misrepresentation by the
defendant; and (c) such misrepresentation has led to
sufferance of damages to the Plaintiff)
19 Erven Warnink v J Townend & Sons Ltd [1979] AC 731 per
Lord Diplock (commonly known as the Advocaat tests). An
alternate test was also given by Lord Fraser in the same case.
For an exposition on the extended form of passing off, see
Kerly, supra note 18, 14.08-14.14
20 Spalding & Bros v A W Gammage Ltd [1915] 84 LJ Ch. 449
For a similar three point test, see Reckitt & Colman Products
Ltd v Borden Inc [1990] 1 All ER 873 per Lord Oliver;
Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd AIR 2004 SC
3540, 3543-45 per Ruma Pal J; Cadila Health Care Ltd v
Cadila Pharmaceuticals Ltd, AIR 2001 SC 1252 (Factors
relevant in an action for passing off in the context of
deceptive similarity were mentioned). A ten-point
proposition has also been laid down in Powell v Birmingham
Brewery Co, (1897) App Cas 710. See Mohta VA, Trade
Marks, Passing off and Franchising, (AIR Publication,
Nagpur) 1st ed., 2004, 676
21 Sykes v Sykes (1824) 3 B&C 543; Perry v Truefit (1842) 6
Beav 66; Spalding v Gammage (1915) 32 RPC 273. For a
detailed explanation on the tort element in passing off, see
Cornish WA, Intellectual Property: Patents, Copyright,
Trademarks and Allied Rights (Sweet & Maxwell, London)
4th ed, 1999, 16.48-16.56
22 Restatement (Third) of Unfair Competition cmt. b (1995),
Terakura Karina K, Insufficiency of trade dress protection:
Lack of guidance for trade dress infringement litigation in
the fashion design industry, Hawaii Law Review, 22, 2000,
569, 585
23 Bonder Moshe H, Patent & LANHAM Acts: Serving two
legitimate proposes or providing an indefinite monopoly?,
15 Albany Legal Journal of Science & Technology, 15, 2004,
1, 16
24 Colgate Palmolive & Co v Anchor Health and Beauty Care
Pvt Ltd, 2003 (27) PTC 478 (Del)
25 Wadlow Christopher, supra note 5, at 665
26 Ciba-Geigy Canada Ltd v Apotex Inc, (1992) 95 DLR (4th)
385 (Sup. Court of Canada)
27 1972 RPC 1, 20
28 On the history of the jurisprudence on product get-up, see
Wadlow Christopher, supra note 5, at 664
29 Terakura Karina K, supra note 23, 579
30 Bachman Travis L, Note, inherent distinctiveness, product
configuration, and product groups: The developing law of
trade dress, Journal of Corporate Law, 23, 1998, 501, 504.
(citing Reichman J H, Design protection and the new
technologies: The United States experience in a transnational
perspective, 19 University of Baltimore Law Review, 19,
1989, 6, 116). See id [quoting Devan Designs Inc v Palliser
Furniture Corp, 25 U.S.P.Q.2d (BNA) 1991, 1995
(M.D.N.C. 1992)]
31 Harlequin Enters Ltd v Gulf & Western Corp, 644 F.2d 946
(2d Cir. 1981) (held that book covers are protectable under
trade dress law)
32 Cesare v Work, 520 N.E.2d 586 (Ohio Ct. App. 1987) (held
that a rock group's look was protectable under state unfair
competition laws); Terakura Karina K, supra note 23, at 581
33 Blue Bell Bio-Medical v Cin-Bad Inc, 864 F.2d 1253, 1256
(5th Cir. 1989) (held that trade dress is essentially its total
image and overall appearance) and John H Harland Co v
Clarke Checks Inc, 711 F.2d 966, 980 (11th Cir. 1983) (held
that trade dress is the total image of a product and may
include features such as size, shape, colour or colour
combinations, texture, graphics, or even particular sales
techniques)
34 Jones v Hallworth, (1897) 14 RPC 225 (the colours, patterns,
shapes and sizes of the plaintiffs product Selvyt dusters
were imitated.); Hoffman-la Roche & Co v DDSA
Pharmaceuticals Ltd, 1972 RPC 1 (green and black capsules)
35 Cadbury v Ulmer, (1988) FSR 385 (shape of chocolate bars);
Weber-Stephen v Alrite Engineering, (1992) RPC 549 (Sup.
Court of SA) (shape of oven barbecue protected.); Edge v
Niccolls [1911] AC 693 (the shape of the productslaundry
blue with a stick in itwas held to have come to indicate the
plaintiffs goods)
36 Reckitt & Colman v Borden, (1990) RPC 341 (HL) (lemon-
shaped plastic container for limejuice held entitled to
protection); Sodastream v Thorn Cascade [1982] RPC 459,
CA. But see Coca Cola v Barr, (1961) RPC 387 (Injunction
refused even though the shape of the coca-cola bottles was
copied)
37 Morison v Salmond (1841) 2 Man & G 385
38 Vision Sports Inc v Melville Corp, 12 USPQ 2d 1740 (details
the various components of trade-dress)
39 Parker & Smith v Satchwell, (1900) 17 RPC 713 (the show
cards on which the plaintiffs goods were sold were copied);
Spicer v Spalding (1915) 32 RPC 52
40 Nestle v Doshi, AIR 1939 cal 466
41 Loraine Day v Kennedy, (1953) 70 RPC 19; Taylor Bros v
Taylor Group, (1991) 19 IPR 615 [CA (NZ)]; Taco Cabana
Int'l Inc v Two Pesos Inc, 932 F.2d 1113, 1117 (5th Cir.
1991) (Taco Cabana's trade dress may include the shape and
 TIWARI: PASSING OFF AND THE LAW ON `TRADE DRESS PROTECTION
general appearance of the exterior of the restaurant, the
identifying sign, the interior kitchen floor plan, the decor, the
menu, the equipment used to serve food, the servers'
uniforms and other features reflecting on the total image of
the restaurant); Two Pesos, 505 U.S. 765-67
42 London General Omnibus v Lavell (1901) 18 RPC 85; Knott
v Morgan, (1836) 2 keen 213 (Protection against passing off
was granted to the omnibuses of the claimant and their
employees clothed in a distinctive manner)
43 Masson Seeley & Co Ltd v Embossotype Manufacturing Co,
(1924) 41 RPC 160 (copying plaintiffs office literature was
held to be passing off)
44 Narayanan P, supra note 11, 580
45 In the United States under the Lanham Act a third
requirement of non-functionality is imposed. This
analysis has been taken from Terakura Karina K, supra
note 23, 583
46 Copyright Act, Section 13(1)(a) (1957)
47 Design Act, Ch II, V, Section 22 (2000), for a definition of
design under the Act, see Section 2(d) of the Act
48 It reads: Trademark means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person from those
of others and may include shape of goods, their packaging
and combination of colors
49 Bachman, supra note 31, 503 (trademarkswordmarks and
logosare familiar, trade dress, on the other hand, is more
amorphous because it encompasses so many things). See
also 15 U.S.C.A. 1125(a)(3)(West Supp. 1999)
50 Vision Sports Inc v Melville Corp, 12 USPQ 2d 1740. In
Colgate Palmolive & Co v Anchor Health and Beauty Care
Pvt Ltd, 2003 (27) PTC 478 (para 45), the court cited the
Vision Sports case with approval and stressed on the need for
the protection of the elements of trade dress in the same way
as a trademark enjoyed protection
51 Id (trade dress protection is broader in scope than trademark
protectionbecause it protects aspects of packaging and
product design that cannot be registered for trademark
protection and because it requires the court to focus on the
plaintiff's entire selling image, rather than the narrow single
facet of trademark) [quoting Vision Sports Inc v Melville
Corp, 888 F.2d 609, 613 (9th Cir. 1989)] quoted in Terakura
Karina K, supra note 23, at 579
52 2003 (27) PTC 478 (Del) per J D Kapoor J
53 Id 480 (Para 4)
54 Id 481 (Para 6)
55 Id 481 (Para 8)
56 Id 482 (Para 10)
57 It will be interesting to note that Colgate has in the past as
well initiated action against rival manufacturers on similar
grounds as averred in the Colgate case. For instance, in
Colgate v Pattron, (1978) RPC 635 (PC), Colgate brought an
action for passing off against the manufacturers of Tringate
on the pretext that the latter, while trading in toothpaste in
packaging coloured red, white and dark blue, was passing off
its goods as those of Colgate. Though an injunction was
granted in favour of Colgate, it is important to note that on
this occasion the phonetic and structural similarity of the
rival trademark went in favour of Colgate
58 Id 497 (Para 53)
59 Id 498 (Para 54)
489
60 Id 500 (Para 59)
61 Chetrapal Sharma v Jagannath Das, AIR 1922 All 178
(Sudh Sindhu and Piyush Sindhu); Elliott v Hodgson
(1902) 19 RPC 738 (Turnbull and Bull dog); Glaxo
Richardson Vicks v Vikas Pharmaceuticals, (1990) IPLR 44
(Vicks Vaporub and Vikas Vaporub); Shanmugham
Mudaliar v Abdul Karem, AIR 1975 Mad 248 (No 4 Jadi
Beedi and No 4 AG Beedi); Glaxo Operations UK Ltd v
Rama Bhaktha Hanuman Candle and Camphor Works,
(1998) PTC (Suppl) 2 293 (Mad) (Glucose-D and D-
Glucose); Combe v Scholl, (1980) RPC 1 (Odor-eater and
Odor-Destroyer); Hygiene Research Institute v Shobhan
Lal Jain, (2001) (2) CTMR 470 (Del)(Super 99 and Super
Vasmol 33); R S Kandaswamy v New Jothi Match
Industries, AIR 1995 Mad 73 (trademarks on matchbox
being figure of frog on one and crocodile on the other. Both
in upward leaping position, held cannot cause confusion)
62 1989 IPLR 215; Anglo-Dutch PC & V Pvt Ltd v India
Trading House, AIR 1977 Del 41(the container of goods
were identical except for the numeral 1001 which had been
changed to 9001)
63 2002 (24) PTC 135 (Cal)
64 Id 140 per Pinaki Chandra Ghosh J
65 Tavener Rutledge Ltd v Specters Ltd, (1959) RPC 18 (held
that the deceptively similar trade dress was too prominent
and the trade marks Taveners Fruit Drops and Specters
Fruit Drops were not that similar); Fisions Ltd v E J
Goddwin, (1976) RPC 653 (held that the similarities of get-
up was overshadowed by the prominence given to the marks
Fisions Gro Bag and Godwins Crop Bag); Cadbury-
Schweppes Pty Ltd v Pub Squash Co Ltd, (1981) RPC 429
per Powell J (plaintiff sold lemon squash under the name
Sole in greenish-yellow cans with a medallion shaped label.
The defendants called their squash Pub Squash with an
identical medallion type label. The colour, shape and size of
the rival cans was identical in appearance. This was held as
not amounting to passing off as the rival products were
sufficiently differentiated by dissimilar marks); Centron
Industrial Alliance Ltd v Gillette UK Ltd, 1998 (18) PTC
288. (attempt to pass off the goods in packing similar to the
packing of foreign goods; held that mention of name of
manufacturer in small print mere device to defend any
possible claim of passing off)
66 (1905) 22 RPC 327
67 William P Kratzke, The Supreme Court and Trade DressA
Short Comment, Hastings Commerce & Entertainment Law
Journal, 24, 2001, 73
68 514 US 159 (1995)
69 (1905) 22 RPC 113
70 Payton & Co v Snelling Lampard & Co, (1900) 17 RPC 48,
52 per Lord Romer J; J B Williams Co v H Bronnley & Co,
(1909) 26 RPC 765, 771 per Cozens Hardy MR; Smiths
Potato Crips Ltd v Paige Potato Crips Ltd, (1928) 45 RPC
132, 146 per Lord Hanworth MR, Sargant L J, 149 and
Lawrence L J, 151; Samsonite Corporation v Vijay Sales,
1998 (18) PTC 372, 442 per Ramamoorthy J; S M Dyechem
Ltd v Cadbury (India) Ltd, AIR 2000 SC 2114, 2127 per
Jagannadha Rao J. See also Sapers v Specters, (1953) 70
RPC 173 (in these days a difference in names is enough
to warn the public that they are getting one traders goods
and not the others...)
490 J INTELLEC PROP RIGHTS, NOVEMBER 2005

71 (1900) 17 RPC 48 75 Wal-Mart Stores Inc v Samara Bros, 529 U S 205(2000)

72 Id quoted in S M Dyechem Ltd v Cadbury (India) Ltd, AIR
2000 SC 2114, 2127
73 Kuber Khaini v Prabholal Ramratan Dass, 2002 (24) PTC
135, 140 per Pinaki Chandra Ghosh J
74 Kerly, supra note 18, 508
76 Chappie Ltd v Spratts Patent Ltd (1954) 71 RPC 455;
Halsburys Laws of England, edited by Lord Hailsham,
(London) 4th ed, 1995, 1397
77 Cadbury-Schweppes Pty Ltd v Pub Squash Co Ltd (1981)
RPC 429(PC)